by Dennis Crouch
Following Bilski, Prof. Rob Merges and I published a paper titled “Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making” arguing, inter alia, that eligibility decisions are largely out of the normal bailiwick of PTO examiners. As imagined by the Supreme Court, the eligibility doctrine really became too philosophical and policy based to be administrable. Alice and Mayo were subsequently released and did not help the situation. Under Dir. Lee, the USPTO did figure out a way to administer the test — by not following the test set-out by the Supreme Court. Rather than looking for abstract ideas and laws of nature as imagined by the Supreme Court, examiners are guided to look specifically only for concepts that the courts have already identified as problematic. Of course, as the number of court cases finding ineligible subject matter rises, the PTO’s approach has necessarily expanded as well.
The administration concern is one factor behind the IPO’s newly proposed legislative change to 35 U.S.C. 101. For the IPO, though, the larger issue though is “revers[ing] the recent Supreme Court rulings and restore the scope of subject matter eligibility to that intended by Congress in the passage of the Patent Act of 1952.”
In a newly published whitepaper, the IPO explains its proposed legislative amendment. [PDF: 20170207_ipo-101-tf-proposed-amendments-and-report]
Following an explanation rejected by the Supreme Court in its eligibility doctrine, IPO explains that the traditional subject matter exceptions including abstract ideas and laws of nature were part of the pre-1952 “invention” requirement. That requirement was eliminated in the 1952 Act in a way that, according to the IPO, should have opened the door to broad subject matter jurisprudence. As the organization sees it, the Supreme Court began to go off track in the 1970s – a path revived in recent years.
With this avenue of legal argument rejected by the courts, the IPO sees itself forced to appeal to Congress for a more direct statement of broad subject matter eligibility.
The IPO’s proposed amendment is as follows:
101 Inventions patentable.
101(a) ELIGIBLE SUBJECT MATTER: Whoever invents or discovers, and claims as an invention, any
new anduseful process, machine, manufacture, orcomposition of matter, or any new anduseful improvement thereto, shall be entitled to thereof, may obtaina patent for a claimed invention thereof therefor, subject only to the exceptions, conditions, and requirements set forth in this Title of this title.
101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY: A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.
101(c) SOLE ELIGIBILITY STANDARD: The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.
In describing the 101(a) amendment, the IPO explains that, in the amended structure “utility [is] the sole basis of eligibility.” The requirement that the entitlement to a patent is “subject only to the exceptions and conditions set forth in this Title” is, according to the IPO, intended “to foreclose the development of any future ‘judicial exceptions” to section 101.” and to recognize that the “only exceptions to the entitlement to a patent … are those defined in the statute.” The IPO statement does not consider the impact of other already-existing non-statutory exceptions such as double-patenting, but presumably those will disappear unless a sufficient statutory hook is found.
Proposed 102(b) includes a very narrow exception to eligibility. I would suggest that there is almost nothing on earth that provably “exists in nature independently of and prior to any human activity” leaving the only actual exception that the invention “exists solely in the human mind.” On this second exception, IPO writes:
This ineligibility criterion … makes eligible any claim limitation that requires some external involvement with the physical world or any representation thereof (e.g., data in a computer).
. . . [However] ideas that do not have physical or tangible aspects . . . are not patentable.
The IPO does not indicate whether the exception would be triggered if a single embodiment of the invention could conceivably exist solely in a human mind. I expect that it would.
According to the IPO, 101(c) is designed to ensure that eligibility is not determined based upon the novelty, obviousness, or definiteness of a patent claim. I would suggest that the language does not quite achieve the purpose suggested. A more effective revision might state instead that “eligibility of a claimed invention. . . shall be determined without regard to its novelty, obviousness, or definiteness, or lack thereof.”
I compliment the IPO on taking this major step and beginning a conversation on legislative fixes to the eligibility doctrine.
I agree with the IPO members that the current situation is quite problematic both because the lines are so unclear and because they are ruling-out many inventions that should qualify in my conception. That said, I believe that the provision likely goes too far. I would suggest that the proposal take at least two further steps: (1) include a third exception to eligibility derived from the printed matter doctrine; and (2) include a new 102(d) that expressly defines the scope of the utility doctrine so that it becomes clear what work will be going on there. It should be clear from the statute that ordinary works of authorship, for instance, are not patent eligible.